Picture Is Not a Mandatory Requirement for a Website-Based Specimen of Use Submitted with Trademark Application

Federal Circuit reverses Trademark Office’s holding that an internet specimen of use must include a picture of the goods to be registrable.

In re Michael Sones, Docket No. 2009-1140 (Dec. 23, 2009)

In re Sones is an appeal from the Trademark Trial and Appeal Board’s (“TTAB”) rejection of Michael Sones’ registration application for the mark “ONE NATION UNDER GOD” for charity bracelets. With his Statement of Use, Sones submitted a specimen consisting of two webpage, neither of which actually showed his bracelets with the mark. Because the specimens did not show the goods with the mark, the Examiner rejected Sones’ application. Sones declined to submit a substitute specimen, apparently because he did not possess a specimen from the time prior to his Statement of Use filing date that included the actual bracelets. The TTAB affirmed the final rejection of Sones’ application.

Sones appealed, arguing that the PTO has improperly imposed a bright-line rule that a trademark specimen of use taken from a website must include a picture of the goods. The Federal Circuit agreed that the PTO appears to enforce such a rule, and that such a requirement is contrary to the trademark laws.

The Federal Circuit noted that, for brick-and-mortar stores, there is no rule that specimens of use must show pictures; rather, use of the mark on the normal commercial packaging is acceptable. The Court could “see no reason why websites must necessarily have pictures to associate a trademark with the goods being sold.” Accordingly, “the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is ‘associated’ with the goods and serves as an indicator of source.” In making this determination, relevant factors include whether the webpages in the application “have a ‘point of sale nature’” and “whether the inherent characteristics of the goods are recognizable from the textual description” provided. Regarding this second factor, the Federal Circuit noted that “charity bracelet” is listed in the PTO’s Acceptable Identification of Goods and Services Manual. Accordingly, use by applicants of the terms and phrases in this Manual is advisable when a picture of an internet specimen of use which includes the goods is not available at the time a trademark application is filed.

Notably, Judge Newman dissented from the decision, asserting that the appeal was mooted by Sones’ later-filed application to register the same mark. This second application was based on actual use with the same goods and included a picture of the mark in association with the goods was included. The second application was filed the same day the T.T.A.B. issued its decision rejecting Sones’ initial application. The majority felt this second application did not moot the appeal, because the second application provided a later constructive use date.